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McDermott Secures Transfer and Consolidation of Case Using Novel Application of the First-to-File Rule

June 10, 2015

In Depth

BOSTON (June 10, 2015) — A team of McDermott lawyers successfully argued for the transfer of a patent infringement suit against client Sig Sauer, Inc., a world-renowned designer and manufacturer of firearms and firearm accessories. The argument was novel because it relied on a little-known aspect of the First-to-File rule.

Sig Sauer and certain of its business partners filed a declaratory judgment action in U.S. District Court for the District of New Hampshire against Freed Designs, Inc. in response to Freed’s allegations that Sig Sauer and its partners infringed a patent that relates to extended handgrips for pistols. Freed had previously filed a lawsuit against Sig Sauer in U.S. District Court in California, but McDermott defeated that suit by demonstrating that Freed lacked standing as the plaintiff.

Several weeks after Sig Sauer and its partners filed the New Hampshire case, Freed filed another suit against Sig Sauer in California that repeated its earlier allegations of infringement. Freed moved to stay the New Hampshire case as well.

The McDermott team opposed the motion to stay and then moved to transfer the second California case to New Hampshire based on the First-to-File rule. That rule gives preference to the earliest filed case as the one to proceed.

Even though Freed’s initial California case predated Sig Sauer’s New Hampshire case, McDermott made the argument that the initial California case should not be considered because Freed had no standing to bring that suit. Both the California and New Hampshire courts adopted McDermott’s argument. The result is that the dispute will now be adjudicated in New Hampshire without further delay, because that court denied Freed’s motion to stay.

With more than 200 lawyers and patent agents around the world, McDermott’s Intellectual Property practice is renowned for its broad trial, appellate, prosecution and transaction experience. Members of the practice hold degrees in a wide variety of technical fields and are uniquely capable of handling intellectual property matters in virtually every technical or scientific discipline. For example, more than 140 members of McDermott’s intellectual property team hold technical and/or scientific degrees and more than 100 are registered to practice before the U.S. Patent and Trademark Office (USPTO). McDermott’s Intellectual Property practice includes numerous lawyers with valuable industry experience as well as former USPTO examiners and petition specialists.

About McDermott Will & EmeryMcDermott Will & Emery is a premier international law firm with a diversified business practice. Numbering more than 1,000 lawyers, we have offices in Boston, Brussels, Chicago, Dallas, Düsseldorf, Frankfurt, Houston, London, Los Angeles, Miami, Milan, Munich, New York, Orange County, Paris, Rome, Seoul, Silicon Valley and Washington, D.C. Further extending our reach into Asia, we have a strategic alliance with MWE China Law Offices in Shanghai.www.mwe.com